Appeal No. 2001-2538 Page 5
Application No. 08/894,193
concerned, that burden is discharged by ‘presenting evidence or reasons why
persons skilled in the art would not recognize in the disclosure a description of
the invention defined by the claims.’ . . . If . . . the specification contains a
description of the claimed invention, albeit not in ipsis verbis (in the identical
words), then the examiner . . ., in order to meet the burden of proof, must provide
reasons why one of ordinary skill in the art would not consider the description
sufficient.” In re Alton, 76 F.3d 1168, 1175, 37 USPQ2d 1578, 1583 (Fed. Cir.
1996).
We agree with Appellant that the examiner has not met the initial burden
of proof. Appellant points to several passages of the originally filed specification
as supporting the disputed limitation, including original claim 2 and page 6, lines
7-10 of the specification. See the Appeal Brief, pages 8-10.
Original claim 2 reads as follows (emphasis added): “2. The method
according to claim 1, wherein the foodstuffs and cosmetic compositions
containing sorbate preservative comprise the preservative both in the form of
sorbic acid and as a physiologically acceptable salt thereof, in particular
potassium sorbate or calcium sorbate.” Page 6, lines 7-10 of the specification
reads as follows (emphasis added): “If citrates (for example citric acid or
disodium citrate) are additionally employed as complexing agents, sorbate-
induced discolorations can be prevented virtually entirely.” We also note page 5,
lines 30-33, which reads (emphasis added): “The foodstuffs and cosmetic
compositions containing sorbate preservative can comprise the preservative here
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